The Complainant is Grosvenor Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Marks & Clerk Solicitors, United Kingdom.
The Respondent is Blv Realty Group, Inc (BLVREALT510), of New York, New York, United States of America (“United States”). 2. The Domain Name And Registrar
The disputed domain name is registered with Ascio Technologies Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On March 23, 2012, the Center transmitted by email to Ascio Technologies Inc. a request for registrar verification in connection with the disputed domain name. On March 26, 2012, Ascio Technologies Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on April 20, 2012. The Center received an email communication from the Respondent on April 23 and 24, 2012, requesting a three to four week extension of time to submit a Response. Upon consideration of the request, and in consultation with the Complainant, the due date for Response was extended to April 26, 2012. The Center received an email communication from the Respondent on April 25, 2012, again requesting a three to four week extension of time to submit a Response.
The Center appointed Andrew F. Christie as the sole panelist in this matter on April 26, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On May 2, 2012, the Panel issued Administrative Panel Procedural Order No. 1 declining to grant any further extension of time for filing a Response, on the ground that the Respondent had failed to provide any evidence establishing the existence of an exceptional case that would, under paragraph 5 of the Rules, justify an extension.
On May 9, 2012, the Respondent sent an email to the Center stating its “objection and withdrawal from this mediation / arbitration process” and its “intention to proceed with this matter in a Court of law in the United States”. On May 10, 2012, the Complainant sent an email to the Center stating: “It is the Complainant's position that the complaint should go ahead and that the parties should be bound by the decision of the Panel.” On May 10, 2012, the Center responded to the Respondent, informing that the provisions of the Policy: (i) require the Respondent to submit to this mandatory administrative proceeding; and (ii) do not prevent the Respondent from submitting the dispute to a court of competent jurisdiction for independent resolution. 4. Factual Background
The Complainant is a specialist developer, investor and fund manager in several sectors, including residential, retail, office and industrial property, in many parts of the world. The Complainant’s business in the United Kingdom began with the development of the London Estate in the 1720s and included the development of Mayfair, Belgravia and Pimlico. Over the last 40 years the Complainant’s business has included residential, office and retail developments and investments in London and in other city centers in England, Scotland and the Republic of Ireland.
Grosvenor Property Developments Limited, a company within the Complainant’s corporate group, was contracted to take on the role of Development Manager at 3-10 Grosvenor Crescent on April 8, 2010. Another company in the Complainant’s corporate group, Grosvenor Limited, acquired the domain name on November 1, 2010. That domain name resolves to a website offering property development services in connection with the site at 3-10 Grosvenor Crescent.
The Complainant owns: (i) a Community Trade Mark registration for the trademark GROSVENOR in respect of real estate management, registered since May 15, 1998; and (ii) a Community Trade Mark registration for the trademark GROSVENOR in respect of a range of services including property development, registered since September 18, 2008.
The disputed domain name appears to have been first registered on June 11, 2007, in the name of BLV Group Holdings. For some time prior to July 14, 2009, another company in the same corporate group as the original registrant, BLV Realty Designs Limited (now in liquidation), was engaged as property development manager for 3-10 Grosvenor Crescent. The involvement of BLV Realty Designs Limited in the site at 3-10 Grosvenor Crescent ceased on July 14, 2009, when its development manager contract was terminated.
In a letter to the Complainant dated July 1, 2011, a representative of BLV Realty Group, Inc. stated that the disputed domain name had been transferred to the Respondent at a time unspecified, but which appears to have been in or around June 2011. The disputed domain name currently resolves to a website purporting to offer property development services in relation to the development at 3-10 Grosvenor Crescent. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical and confusingly similar to its GROSVENOR trademark because the dominant element of the disputed domain name is the word “Grosvenor”. The addition of the definite article “the” and the descriptive word “crescent” are not sufficient to distinguish the disputed domain name from the Complainant’s trademarks. In addition, the Complainant contends it has unregistered rights in the names GROSVENOR and GROSVENOR CRESCENT in relation to property investment and development, resulting from its use of those names, including use as a domain name. The Complainant contends that members of the public would be confused by the use of the disputed domain name, resulting in customers being drawn away from the Complainant’s website causing damage to the Complainant’s business.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) at the time the Respondent acquired it neither the Respondent nor any other company in its corporate group had any involvement in property development in Grosvenor Crescent, and this continues to be the case; (ii) there is no evidence that the Respondent is using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services; (iii) the Complainant has accrued substantial goodwill and reputation in the GROSVENOR name in connection with property development services over may decades and the Respondent and its affiliates would have been aware of this at the time of registering the disputed domain name and at the time of its transfer to the Respondent; (iv) the Complainant is not aware the Respondent has been commonly known by the name “Grosvenor” or “Grosvenor Crescent”; and (v) applications to register trade mark applications in respect of the GROSVENOR CRESCENT name were withdrawn by the Official Receiver to BLV Realty on August 8, 2011, suggesting that the Respondent and its group have no interest in acquiring rights in the name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the website to which the disputed domain name resolves creates the misleading impression that the Respondent is offering property development services under the GROSVENOR name in relation to the Grosvenor Crescent site, even though the Respondent and its affiliates have no involvement with the development at this site, thereby confusing the public who will believe that the Respondent is in some way connected with the Complainant; (ii) the enquiries page on the website to which the disputed domain name resolves is inactive and therefore likely to tarnish the reputation of the Complainant’s trademark because the public will be frustrated when they do not receive a reply; (iii) given that the disputed domain name is not being properly used by the Respondent it must be being retained for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs, and/or for disrupting the business of the Complainant; and (iv) the transfer of the disputed domain name to the Respondent was made in bad faith because its purpose was to keep it in the BLV corporate group (to which the Respondent belongs) even though it was no longer of any practical use to any company in that group, and because the transfer to a company outside the United Kingdom would create additional procedural requirements for the Complainant in taking legal action to recover it. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion And Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark GROSVENOR, and adds the definite article “the” at the beginning and the descriptive word “crescent” at the end. The addition of these words does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. This is especially so given that the Complainant operates a property services business under the GROSVENOR trademark in relation to a property at 3-10 Grosvenor Crescent. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant. The Respondent has not even asserted, let alone provided any evidence, that any of the circumstances specified in paragraph 4(c) of the Policy as demonstrating rights or legitimate interests in the disputed domain name exist in this case. The evidence on the record provided by the Complainant indicates that the disputed domain name was registered by the Respondent as a result of a transfer from an affiliated company. At the time of the transfer, the Respondent and its affiliated companies had ceased to have any involvement in the development at 3-10 Grosvenor Crescent – a fact which would preclude a finding that the disputed domain name is being used by the Respondent in connection with a bona fide offering of goods and services. Accordingly, this Panel finds the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name was registered in the Respondent’s name more than a decade after the Complainant first registered its GROSVENOR trademark. The evidence on the record provided by the Complainant with respect to the use of its GROSVENOR trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain name was registered in the Respondent’s name, the Respondent knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to create confusion about the Respondent’s relationship to the Complainant’s property development at 3-10 Grosvenor Crescent. For all these reasons, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Dated: May 10, 2012
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